In the case of EASI SLIM

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In the case of EASI SLIM Powered By Docstoc
					                                                 256/85/AV


                 IN THE SUPREME COURT OF SOUTH AFRICA
                          (APPELLATE DIVISION)


In the matter between:


HOECHST PHARMACEUTICALS (PROPRIETARY)


LIMITED                                           APPELLANT


and


THE BEAUTY BOX (PROPRIETARY) LIMITED             1st RESPONDENT

(in liquidation)
MEDCALF BARRY & ASSOCIATES
(PROPRIETARY) LIMITED                            2nd RESPONDENT
(in liquidation)

CORAM: CORBETT, GROSSKOPF, VIVIER JJA, NICHOLAS et BOSHOFF, AJJA


HEARD: 19 February 1987



DELIVERED: 12 March 1987




                        J U D G M E N T


NICHOLAS, AJA


          This is an appeal against an order of VAN NIEKERK J


                                                  in ..........
                                                         2


in the Witwatersrand Local Division dismissing an application for


an interdict in respect of alleged passing off.


        The applicant in the Court a quo was HOECHST PHARMACEUTICALS



(PTY) LIMITED ("HOECHST"). One of the products manufactured by it


is called FIBRE TRIM. This is said to provide a natural way of


reducing weight, and consists of tablets composed mainly of grain


and citrus fibre and milk powder. HOECHST introduced it to the South


African market in the latter part of November 1983.


        The tablets are contained in a bottle packed in a cardboard



box. The following is a black and white reproduc-tion of the front


of the box, which is what would ordinarily be seen by a prospective


purchascr:
SEE ORIGINAL JUDGMENT PIGTURE



3


On the actual box the background is white; the printing is black;


the half-orange and the head of wheat are in natural colours; and


the tape measure, which surrounds the box, is yellow with black


figures.



           The bottle bears a label the front of which is sub-


                                         stantially ..........
4
stantially identical.


        Between November 1983 and February 1985 HOECHST en-gaged,


at a cost of over Rl million, in an extensive adver-tising campaign


to promote FIBRE TRIM. This included a tele-vision commercial, which


was shown sixty-nine times on South African television between


January 1984 and February 1985; and also radio advertisements, full


page colour advertisements in magazines with a national



circulation, and coloured posters exhibited at points of sale in


pharmacies and supermarkets throughout the country. During 1984


HOECHST sold over 1,2 million boxes of FIBRE TRIM, with a turnover


in excess of R8 million. FIBRF TRIM, it was alleged and not denied,


be-came a market leader in the slimming aids market in South


                                                  Africa ......
                                                        5


Africa and in April 1985 when the application was launched,


it held the dominant share of the market.


         The television commercial was said to be the core


of HOECHST's case. The following is a brief description


of it.


                   Articles of women's clothing are seen falling
                   to the floor, apparently thrown from behind a
                   screen. A slim, attractive blonde appears. She
                   is clad in a white leotard, which has the words
                   FIBRE TRIM and the motifs of half orange and
                   head of wheat on the chest. She stands with
                   arms akimbo and says that she is throwing away
                   her fat clothes, forever. She is then seen in
                   the same get-up holding a yellow tape measure
                   about her waist. This pic-ture fades and a
                   FIBRE TRIM pack emerges, the words and the
                   motifs and the tape measure from the leotard
                   taking their place on the box, in front of
                   which stands a FIBRE TRIM bottle.


                                                     In ........
                                                         6


        In February 1985, THE BEAUTY BOX (PTY) LTD (the first


respondent in the application) produced a product under the name


EASI SLIM, with substantially the same ingredients as FIBRE TRIM.


MEDCALF BARRY & ASSOCIATES (PTY) LTD (the second respondent) was


responsible for its marketing and distribution. In the case of EASI


SLIM, too,the tablets were in a bottle, packed in a cardboard box


having the same dimensions as the FIBRE TRIM box. The following


is a black and white reproduction of the front of the box:




                                                     On .......
SEE ORIGINAL JUDGMENT PIGTURE



         7


         On the actual box the background is white; the printing is black


         except for the word FIBRE, where it is first used, which is in red;


         the girl has blonde hair; the leotard she is wearing is red; and


         the tape measure, which surrounds the box, is yellow with black


         markings.




                                                           The ........
                                                         8 The


        bottle bears a label, the front of which is


substantially identical.


        In the notice of motion, HOECHST sought an order in-


terdicting the respondents inter alia


        (i) from dealing in the course of trade with a

                   product marketed in the bottle and box in
                   the form illustrated; (ii) from using a tape
       measure in conjunction
                   with any slimming product in circumstances
                   which were specified; (iii) from using a yellow
      tape measure in relation
                      to any packaging or label for a fibre slim-
                   ming product; and (iv) from passing off any fibre
      slimming product

                   as the applicant's FIBRE TRIM product.


Its cause of action was said to be based on unlawful compe-tition



and, more particularly, on passing off.



        In his judgment in the Court a quo, VAN NIEKERK J



                                                 said ..........
                                                        9


said that in his view, whether the products were placed side by


side or inspected individually, there could be no confusion


whatsoever between them; and that, taking full cognisance of the


television advertisement, he was not per-suaded that the


respondents had in any way represented EASI SLIM as the product


of the applicant. Accordingly, the applicant had failed to make


out a prima facie case for the relief which it claimed, and the


application was dismissed with costs.



        Leave to appeal to this Court was granted.



        After the appeal had been noted, both the respondents were



placed under provisional liquidation. Thereafter HOECHST duly gave



notice, in terms of s. 359(2)(a) of the



                                              Companies .......
                                                       10


Companies Act, No 61 of 1973, of its intention to proceed with the


appeal. The attorneys acting for the respondents advised the


Registrar of this Court that in the light of their financial


situation the respondents would not formally be opposing the


appeal. In consequence only HOECHST was


represented at the hearing.

                             and General Agencies (Pty) Ltd In
        the leading case of Capital EstateTand Others v


Holiday Inns Inc and Others 197 7(2) SA 916 (A), RABIE JA


said at 929 C-E:



                   "The wrong known as passing-off consists in a
                   representatíon by one person that his business
                   (or merchandise, as the case may be) is that of
                   another, or that it is as-sociated with that of
                   another, and, in order to determine whether a
                   representation amounts to a passing-off, one
                   enquires


                                                whether ........
                                                      11


                  whether there is a reasonable likelihood that
                  members of the public may be con-fused into
                  believing that the business of the one is, or
                  is connected,with that of another ... Whether
                  khere is a reasonable likelihood of such
                  confusion arising is, of course, a question
                  of fact which will have to be determined in
                  the light of the circumstances of each case."


        In Policansky Bros. Ltd. v L & H Policansky, 1935



AD 89, WESSELS CJ pointed out at 97 that -



                  "The Roman-Dutch Law was well acquainted with
                  the general principle that a person cannot, by
                  imitating the name, marks or devices of another
                  who had acquired a reputation for his goods,
                  filch the former's trade."


and said at 98 that -



                  "As our Roman-Dutch authorities do not deal

                  with the various aspects of passing-off

                  actions that modern conditions have evoked,

                  we in South Africa have followed the

                  principles enunciated by the English


                                                    and ......
                                                        12


                   and American courts where such principles are
                   not in conflict with either our com-mon law or
                   our statute law."


        The classic dictum in England is that of LORD KINGSDOWN


in Leather Cloth Co Ltd v American Leather Cloth Co Ltd



(1865) 11 HL Cas 523 at 538 (11 ER 1435):


                   "The fundamental rule is, that one man has no
                   right to put off his goods for sale as the goods
                   of a rival trader, and he cannot, therefore (in
                   the language of Lord Langdale in the case of
                   Perry v Truefitt (1845) 6 Beav. 66)'be allowed
                   to use names, marks, letters, or other
                   indicia, by which he may induce purchasers to
                   believe that the goods which he is sel-ling are
                   the manufacture of another per-son..' "



        The applicable principles were stated in the speech


of LORD PARKER OF WADDINGTON in A.G. Spalding and Bros v A W


Gamage Ld (1915) 32 RPC 273 (H.L.) at 284 lines 16-29:



                                                "My .........
                                     13


"My Lords, the basis of a passing-off action
being a false representation by the defendant,
it must be proved in each case as a fact that
the false representation was made. It may, of
course, have been made in express words, but
cases of express misrepresentation of this sort
are rare. The more common case is, where the
re-presentation is implied in the use or
imitation of a mark, trade name, or get-up with
which the goods of another are associated in the
minds of the public, or of a particular class
of the public. In such cases the point to be
decided is whether, having regard to all the
circum-stances of the case, the use by the
de-fendant in connection with the goods of the
mark, name, or get-up in question impliedly
represents such goods to be the goods of the
plaintiff, or the goods of the plaintiff of a
particular class or quality, or, as it is
sometimes put, whether the defendant's use of
such mark, name, or get-up is calculated to
deceive. It would, however, bc impossible to
enume-rate or classify all the possible ways in
which a man may make the false representa-tion
relied on."

                                  The .......
                                                       14


The application of the principles is not limited to material


appearing on the goods themselves. That was made clear in


the opinion of the Judicial Committee of the Privy Council


in an appeal from Australia (Cadbury-Schweppes Pty Lbd v


The Pub Sguash Co Ltd (1981) RPC 429)where LORD SCARMAN said


at 490 lines 36-44:


                  "The width of the principle now

                  authori-tatively recognised by the High Court

                  of Australia and the House of Lords is,

                  there-fore, such that the tort is no longer

                  anchored, as in its early nineteenth century

                  formulation, to the name or trade mark of a

                  product or business. It is wide enough to

                  encompass other descrip-tive material, such as

                  slogans or visual images, which radio,

                  television or news-paper advertising campaigns

                  can lead the market to associate with a

                  plaintifjf's product, provided always that

                  such de-scriptive material has become part of

                  the


                                            goodwill    .......
                                                       15


                   goodwill of the product. And the test is
                   whether the product has derived from the
                   advertising a distinctive character which the
                   market recognises."


        In the present case, HOECHST's complaint is that the EASI


SLIM packaging misrepresents that it is the product of, or is


associated with, HOECHST.


        It does not contend that the misrepresentation appears from


a comparison of the EASI SLIM pack with the FIBRE TRIM pack alone.



That attitude is undoubtedly correct, having regard to the general


impression produced by the two packs, and the important differences


between them - in particular, the FIBRE TRIM pack does not contain


a representation of a blonde in a red leotard, and the EASI SLIM


pack does not have the motifs of a half orange and a head of wheat.



                                              As ............
                                                      16


        As formulated in the founding affidavit, and de-


veloped at length in counsel's heads of argument, HOECHST's


case was that the comparison to be made was one between the


EASI SLIM pack and the complete "gestalt impression" of FIBRE


TRIM. This "gestalt", it was said by Mr NEL, who is the


product marketing manager of the relevant division of HOECHST,


                  "... lies not only in the physical product

                  packaging but also very materially in HOECHST's

                  advertising of it. Put another way, users of

                  slimming aids, who have a passing familiarity

                  with the product FIBRE TRIM, have an image of it

                  comprised in part of recollection of the

                  packaging and in part of recollection oC themes

                  in advertising for it." (Nel's emphasis)


Reliance was placed particularly on the television commer-


                                                  cial .......
                                                         17 cial,


but also on HOECHST's other advertising. NEL said that "a costumed



blonde is central to the trade dress or gestalt of ... FIBRE TRIM",


and that the symbols of a cos-tumed blonde and yellow tape measure


perform the function of "linking ineluctably the television


advertising with the image on the FIBRE TRIM packaging itself".


What he appears to be saying is that the "gestalt impression" is


a composite memory image derived from the recollection of visual



per-ceptions received at different times from the FIBRE TRIM pack


and from advertising sources.


        The word "gestalt" came into the English language by way


of Gestalt Psychology. It is defined in Volume I of the Supplement


of the Oxford English Dictionary as:


                                                 "A .........
                                                       18


                  "A 'shape''configuration', or 'structure'
                  which as an object of perception forms a
                  specific whole or unity incapable of
                  ex-pression simply in terms of its parts (e.g.
                  a melody in distinckion from the notes that make
                  it up)."


        NEL and HOECHST's counsel do not, ib is clear, use


the word "gestalt" in that sense. As they use it, it is



an object not of perception, but of recollection. Counsel



could not refer to any such use of it in a dictionary or a



standard work of reference, or a work on psychology. Nor



was there expert evidence from a psychologist to lend sup-



port to the bald assertions of NEL, whose only claim to ex-



pertise is in the field of marketing pharmaceutical, personal



hygiene and health products. At best the existence of a



"gestalt impression" is no more than theoretical, and there has



                                                 been ........
                                                       19 been no


attempt to prove that any individual, let alone a substantial part


of the public, has the "gestalt impression" which NEL describes.


        When faced with these difficulties, counsel abandoned any



reliance on "gestalt impression". At the end of the day their


argument was that the repeated showing of the tele-vision


commercial, and the other advertising, had established a blonde in


a leotard,and a yellow tape measure,as symbols per se of HOECHST's


product, which it was said, "are linked together through the


packaging".



        From some of the affidavits filed on behalf of HOECHST, it


appears that when the deponents were shown the EASI SLIM pack in


the course of the marketing survey which will be re-



                                             ferred   .........
                                                        20 ferred to


later in this judgment, it recalled to them the television


commercial, including the lady throwing away her "fat clothes", and


a yellow tape measure. That, however, does not establish a case.


What HOECHST had to show was that as a result of the television


advertising a blonde in a leotard,and a yellow tape measure,had


become part of the goodwill of the product, which required proof


that the product had derived from the advertising a distinctive


character which the market recognized. (See the statement by LORD


SCARMAN in the Cadbury-Schweppes case quoted above.)


          In Oertli A G v E J Bowman (London) Ld & Others

         388 (1957)RPC (CA) JENKINS LJ said at 397 lines 10
to 34:


                    "It is,of course, essential to the success of any

                    claim in respect of passing-off


                                                   based ........
                                     21


based on the use of a given mark or get-up that
the plaintiff should be able to show that the
disputed mark or get-up has become by user in
this country dis-tinctive of the plaintiff's
goods so that the use in relation to any goods
of the
kind dealt in by the plaintiff of that
             will mark or get-up will be
understood by the trade
and the public in this country as meaning
that the goods are the plaintiff's goods.
The gist of the action is that the plaintiff,
by using and making known the mark or get-
up in relation to his goods, and thus
causing it to be associated or identified
with those goods, has acquired a quasi-

proprietary right to the exclusive use of
the mark or get-up in relation to goods of
that kind,which right is invaded by any

person who, by using the same or some
deceptively similar mark or get-up in re-

lation to goods not of the plaintiff's

manufacture, induces customers to buy from
him goods not of the plaintiff's manufac-
ture as goods of the plaintiff's manufac-
ture, thereby diverting to himself orders
intended for and rightfully belonging to


                               the .........
                                                       22


                  the plaintiff. But, as appears from "Kerly on
                  Trade Marks", 7th Edition, at page 521, "it is
                  not, however, necessary to show that the
                  customers who knew the goods of the plaintiff's
                  firm by a particular name or get-up knew
                  anything whatever about the plaintiff. It is
                  immaterial that they did not even know his name;
                  for it is sufficient to prove that pur-chasers
                  of his goods recognised, by the use of the marks
                  in question in connection with them, that they
                  were goods of a par-ticular class, and to show
                  that such class is, in fact, constituted by his
                  goods". See also William Edge & Sons Ld. v.
                  William Niccolls & Sons Ld., (1911) A.C. 693.
                  Nevertheless, if the plaintiff can-not prove
                  the association or identification of the
                  disputed mark or get-up in this country with
                  goods in fact of his manufac-ture, the action
                  fails in limine."



(See also the speech of VISCOUNT SIMONDS in the appeal to



the House of Lords((1959)RPC 1 at 4 lines 21 to 31)).



                                              JENKINS ........
                                                         23


JENKINS W was dealing with the use of "a given mark or get-up", but


what he said applies with equal force to the use of other descriptive



material such as visual images on tele-vision.


         In the FIBRE TRIM commercial there are various camera shots


of the costumed blonde, showing her inter alia throw-ing away her


"fat clothes", standing with arms akimbo, and standing with a


yellow tape measure about her waist. Posters exhibited in shops


and supermarkets showed the same or a "look-alike" blonde in the


latter pose.


         in my opinion persons viewing the commercial would not see


the girl as a symbol of FIBRE TRIM at all; they would see her as


a girl who plays a part in a commercial which adver-


                                                   tised .......
                                                         24


tised FIBRE TRIM. (It is open to doubt whether a blonde, in leotard


or swimming costume, could, as such and without more, ever be


distinctive of a particular slimming product: pic-tures of women


(blonde or brunette) so clad form part of the common coinage of


slimming and other product advertising.)



        Nor do I think that it has been shown that the shot of the



girl momentarily standing with arms akimbo (which is the only one



bearing any similarity to the blonde on the EASI SLIM package) has



become distinctive of FIBRE TRIM.



        There is no evidence, other than NEL's assertion, that



a yellow tape measure has become distinctive (in the



                                           relevant ........
                                                       25


relevant sense) of FIBRE TRIM. From the copies of adver-tisements


contained in the papers, it would seem that a tape measure is a


visual cliché in slimming products adver-tising - not surprisingly


in the present day, when a woman's figure is often defined by her



"vital statistics", and the waist-line is a preoccupation of the


not-so-slender.


        The conclusion is that HOECHST did not prove the necessary


association or identification of a costumed blonde or a tape


measure with FIBRE TRIM.


        It was argued, however, that it had been shown that there



was actual confusion between FIBRE TRIM and EASI SLIM. In this


regard reliance was placed on the report of a market-ing survey


carried out by MARKINOR (PTY) LTD, under the direction of Dr


PRISCILLA DE GASPARIS, its research director


                                                 since .......
                                                        26


since 1983, whose affidavit was filed by HOECHST.


        In a passing off case decided in 1968 (Coca Cola Co


v William Struthers & Sons Ltd,(1968)RPC 231 (Court of Session)


there was evidence of this kind. This had been


obtained by an employee of SOCIAL SURVEYS GALLUP POLLS LIMITED,

                             out an organisation which carried
market research and the like.


The LORD PRESIDENT (LORD CLYDE) observed at 236 lines 8-10:



                   "We are accustomed to Gallup Polls of this

                   nature conducted to confirm a politician's

                   hopes or fears, but it is a novel ex-pedient

                   to use answers to a questionnáire as evidence

                   in a court of law."


The expedient is novel no longer. The law reports contain



a number of cases in which it has been adopted: in South



Africa in Rusmarc(SA)(Pty) Ltd v Hemdon Enterprises (Pty) Ltd



                                                 1975 .........
                                                       27 1975(4)


SA 626 (W) and Die Bergkelder v Delheim Wines (Pty) Ltd, 1980(3)



SA 1171 (C); in New Zealand in Customglass Boats Ltd v Salthouse


Brothers Ltd,(1976)RPC 589; and in England in the G E Trade Mark


Case, (1969) RPC 418 (Ch.D); (1970) RPC 339 (Court of Appeal); and


(1973) RPC 297 (House of Lords); Lego System Aktieselskab and


Another v Lego M Lemelstrich Ltd(1983)FSR 155 (Ch.D);and


Stringfellow v McCain Foods (G.B.) Limited (1984) RPC 501 (in the



Chancery Division and the Court of Appeal).


        There are two problems associated with such surveys: the


problem of getting the evidence before the court (the problem of


admissibility); and the problem of the value of the survey, having


regard to the way in which it was con-


                                              ducted   ........
                                                        28


ducted (the problem of weight).


        In the view which I take of the survey in the present case,


it is not necessary to consider the first problem, and I shall


assume, without deciding, that the survey is admis-sible in


evidence.


        There has been scepticism expressed as to the value


of such evidence. In his judgment in the Chancery Division


in the Stringfellow case (supra) at 513, WHITFORD J said:



                  "Before I come to the evidence on which I am able

                  to rely, I must mention some evidence upon which

                  I do not propose to rely at all. Both parties

                  decided to commission public opinion surveys.

                  I confess that my experience in the past so far

                  as public opinion surveys in pro-ceedings of

                  this kind are concerned has


                                                 not ...........
                                                        29


                  not been a happy one and this case has been no
                  exception. I do not say that the day may not come
                  when I shall find such a survey or such surveys
                  of value; I say only that it has not come yet."


(Compare the observations of SLADE L J in his judgment in



the Court of Appeal at 532 lines 10-12).


        The survey in the present case was commissioned by


HOECHST in January 1985 in anticipation of the market launch


of EASI SLIM. It was stated in the introduction to the re-



port:



                  "(The pack of EASI SLIM) uses the same themss as

                  advertising for (HOECHST's) highly successful

                  product, Pibre-Trim - a young woman in a bathing

                  suit and tape measure. (HOECHST) suspects that

                  Fibre-Trim's seating in the public mind is

                  being misappropriated by Easi-Slim.

                  Consequent-ly research was commissioned to

                  establish


                                               whether ........
                                                         30


                    whether in fact consumers of slimming
                    products are confused between the two
                    products, Easi-Slim and Fibre-Trim."


         The survey consisted of separate interviews, at


which a questionnaire was used, with two hundred white females who



were users of slimming products. An EASI SLIM product pack was shown


to each interviewee, who was then asked a number of questions,


including -Q.2 Have you seen or heard of this before? Q.3 When did


you first see or hear of this? Q.4 How did you first get to see or


hear about this? Q.5 Have you seen or heard any advertising for this?


Q.6 Please tell me everything you can remember about the



advertising.


         Dr. DE GASPARIS analysed the results of the survey.


                                                  which ........
                                                     31


which she summarized in her affidavit as follows:


        In regard to Q.l, she said:


                  "Of the 200 persons interviewed,

                  45,5%(or 91 interviewees) said that they
                  had seen or heard of EASI SLIM fibre
                  tablets before;
                  A further 35% (or 70 interviewees) said
                   that they had possibly heard of the product,
                  but were not quite sure;
                  The remaining 39 interviewees in the sample
                  initially declared the product to be FIBRE
                  TRIM, but almost immediately changed their
                  mind."



        In regard to Q.2, 40 interviewees claimed to have



first seen or heard of the product on television, 20 inter-



viewees claimed to have seen it in magazines and 12 inter-



viewees claimed to have heard about the product in radio ad-



vertising. Dr. DE GASPARIS said that -



                                         "While ...........
                                                        32


                    "While no certain conclusion can be
                    drawn from the mere fact that 36% of the
                    sample claimed to have first encountered
                    in advertising a product which had not
                    been advertised (i.e. the interviewees
                    could have been speculating) a very
                    different picture emerges (when the

                    answers to Qs. 5 and 6) are analysed)...
                    105 interviewees claimed to have seen
                    advertising for the product. (This re-
                    presents 65% of the 161 interviewees who
                     declared they were familiar with the product).
                    Thus in total 72 interviewees (or 36% of
                    the sample) claimed first to have heard
                    of the product in advertising."


She continued:



                 "The nature of a great deal of the adver-tising

                 material recalled unequivocally in-dicates, in my

                 opinion, familiarity with distinct themes in FIBRE

                 TRIM's adver-tising, with which themes I am fully

                 familiar ... Those themes are -1. the lady who

                 thrcw away her fat clothes/

                    a skinny model throwing away her fat clothes


                                                  (25 .........
                                                       33


                   (25 interviewees);


                2. the use of the Springbok cricketer, Alan
                   Kourie, in the advertising (2
                   interviewees)."


Her conclusion was that "this aspect of the survey positive-


ly indicates complete confusion in a significant proportion


between the EASI SLIM pack and FIBRE TRIM as advertised."


        In my opinion, that conclusion is unacceptable for



the reasons which follow ..



(a) A fundamental criticism of the survey is, to use the


words of LORD CLYDE in the Coca Cola case (supra)at 236-7:


                   "... that it arises from an artificially

                   contrived situation wholly divorced from 'the

                   course of trade', and the evidence thus sheds

                   little if any light on the question whether

                   when the persons inter-viewed were actually

                   buying the products


                                                 of ............
                                                       34


                   of one or the other of the parties to this case
                   they would confuse one product with the other."


(b)   No comparison between the two products was at any time


invited. Interviewees were not shown the FIBRE TRIM pack, even at


the end of the interview, when a sight of it migh t have provided


a wholesome corrective to their mistaken im-pressions.



(c)   Two of the questions were subject to serious criticism. It is


basic, if a survey is to have any value, that the questions should


be fair, and that they should be so formulated as to preclude a


weighted or conditioned response. In his affidavit, Mr. GREEN, the


managing director of MANIKOR, said that "It is important that


questions asked in survcys of this kind be free from bias so that a



true response is elicited


                                                 from ..........
                                                        35 from


each interviewee." It is at least as important that the guestions


should be free from suggestio falsi.


        Qs 1 and 5 were likely to mislead and conseguently to elicit


incorrect answers. It was implicit in Q.1 (namely, "Have you seen


... this before") that the pack exhibited was available to be seen


in the market place. Similarly it was implicit in Q.5 (namely, "Have


you seen ... any adver-tising for this") that the product had been



the subject of visual advertising which could have been seen by the


inter-viewee. Both suggestions were false. The survey, accord-ing


to GREEN, was conducted "within one or two days of the initial and


sporadic first distribution of EASI SLIM fibre tablets on the


market". And up to that time there had been no visual advertising


of EASI SLIM. In these circumstances,


                                                   it ..........
                                                       36 it


would have been natural for interviewees to think, mis-takenly,


that they had seen the EASI SLIM pack, and that they had seen


advertisements for it. It is probable that many


of them were in doubt, or guessing - that is indicated by


      that the fact that out of a total of 200, 70 interviewees
said that


they had possibly heard of the product, but were not quite



sure, and 39 initially declared the product to be FIBRE TRIM



but almost immediately changed their minds. If they were



in doubt or guessing, they would have been likely, in view



of the false suggestion, to give the answers "yes" to Q.l



and to Q.5, and in answer to Q.6 to recall the advertising



which they had seen, namely, that of FIBRE TRIM.



(d) The survey did not deal with the important question of



                                                   what ......
                                                        37


what was the cause of any confusion which might have existed.


Confusion per se does not give rise to an action for passing


off. It does so only where it is the result of a misre-


presentation by the defendant that goods which he offers are


those of the plaintiff or are connected with the plaintiff.


That has not been shown. The cause of any confusion is pro-



bably to be found elsewhere.


        In Halsbury's Laws of England,(4th ed., Vol 48 para


153)) it is said:


                    "Where the public is familiar with the

                    plaintiff's goods or services of a parti-cular

                    kind, substantial numbers of persons may assume

                    that competing goods or services offered by a

                    newcomer are the goods or services of the

                    plaintiff with whom they have hitherto been

                    familiar, but confusion arising merely from

                    this cause is to be disregarded."


                                                   In ..........
                                                         38


In support the learned authors cite Jones Bros Ltd v Anglo-


American Optical Co (1912) 29 RPC 361 (C.A.), where FLETCHER


MOULTON L.J., having posed the question, "What evidence have


(the plaihtiffs)called?", said at 369 lines 19-24:


                  "They have called people, most of whom knew of
                  the Plaintiffs' goods and did not know of
                  anybody else who was making goods of that
                  colour and nature; and it is very natural that,
                  having seen dusters of that colour and nature
                  they thought, at first sight, that they were
                  the Plain-tiffs' goods, because they did not
                  know of anybody else who was making them."


See also Compatibility Research Ltd v Computer Psyche Co Ltd


1967 RPC 201 (Ch.D) where STAMP J said (206 lines 17-25):



                  "No doubt both the plaintiff and the defen-dant
                  companies are carrying on similar businesses;
                  also, no doubt, they are using similar methods;
                  and, if it be the fact that,


                                                 until    .......
                                                            39



                    until the defendants set up business, the plaintiff's

                    business or its methods was almost unique in this

                    country ... it seems very likely that members of the

                    public who had heard of the plaintiff's business and

                    how it was carried on would, when the defendants

                    started their business, assume, when they came upon the

                    defendant's pamphlets or brochures, that this was the

                    business of which they had heard. ..."



        When it was introduced by HOECHST, FIBRE TRIM was the



first fibre slimming product on the South African market.



HOECHST's advertising of it was extensive. Sales were "huge".



The only competing fibre tablet referred to in the papers was



QUIKSLIM, which the first respondent introduced in September



1984. According to NEL "the product did not do anywhere near



as well as FIBRE TRIM". The QUIKSLIM pack was not depicted in the



papers and there was no evidence of the extent to which it



                                                   had   ..........
                                                       40


had been advertised.


        In these circumstances, it is probable that inter-viewees,


who had heard of FIBRE TRIM, and seen the advertising would, when


shown the EASI SLIM pack, assume that this was the product of which


they had heard and which they had seen advertised.



        My conclusion is therefore that HOECHST failed to make



out a case of passing off, and that VAN NIEKERK J cor-rectly



dismissed the application.



        The appeal is dismissed with costs.




H C NICHOLAS, AJA                           CORBETT, JA

                                            BOSHOFF, AJA
                                            GROSSKOPF, JA) Concur
                                            VIVIER,JA )
                                            BOSHOFF,AJA)

				
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